‘Use it or lose it’ message from recent cases

Three trade mark verdicts in recent months concentrate the mind on the need to use brands on all of the products for which they are registered or risk losing the valuable protection registration confers. One case also shows that use does not have to be extensive.

Topic: Brands

Who: The owners of the trademarks VITAFRUIT, MOVIESTAR and COUNTRY LIFE

Where: European Court of Justice and UK Trademark Registry

When: December 2005 / January 2006

What happened:

Three recent cases highlighted the "use it or lose it" nature of trademark registration.

In the cases of COUNTRYLIFE and MOVIESTAR, these brands faced applications by competitors for revocation of the registrations on grounds of non-use.

Under European Union trademark law, if I register a trade mark for particular goods or services but then fail to use the brand in relation to them for five continuous years, I can lose that registration.

Countrylife case

In the COUNTRYLIFE case, the mark was registered in a number of classes for foodstuffs, food preservation products and health products.

In actual fact, however, over the previous 5 years the goods sold under the brand were "nutritional products for a health conscious lifestyle" and were primarily vitamin products, supplements and health tea drinks. So the verdict was that the registration would be revoked for all goods except for essential oils for foods in Class 3 and vitamins and minerals and dietary supplements in Class 5.

Moviestar

The Moviestar brands were registered in Class 9 for a wide range of goods, namely "apparatus for recording, transmission and reproduction of sound or images; computer hardware; computer software but not including software relating to movie stars".

The party seeking revocation of the registration argued that the entire registration should be revoked for non-use.

On the evidence, the owner of the MOVIESTAR registration was only able to establish use of the marks for video capture cards, television tuner cards, applications software for such goods, input leads and patch panels.

In the circumstances, for the brand owner to retain the registration covering the wide range of named goods went well beyond the narrow scope of the use actually shown. So the verdict was that the registration would be revoked to the extent that the specification covered the broader goods categories.

Vitafruit

In the VITAFRUIT case a different question regarding use was dealt with. This was exactly how much use was needed in order to keep a trade mark registration alive and fend off any application for revocation on grounds of five years' non-use.

In this case, the brand owner, the Sunrider Corp, showed that over the relevant period there had been sales of a just one product bearing the trade mark, amounting to just 293 units, each of 12 items, aggregating to a value of just EUR 4,800. Nevertheless the Advocate General to the European Court of Justice (whose opinion is largely followed by the Court itself when it delivers its full judgment shortly afterwards), took the view that this level of sales should not be categorised as merely token or minimal.

Why this matters:

Before applying to register a brand for specified goods or services, it is vital that the applicant is confident of being able to make at least some use of the brand in respect of all the goods or services covered by the registration over the ensuing years.

The VITAFRUIT case shows that a very modest use will be sufficient, but no use at all will surely mean that the registration falls away as regards those products where even a modest level of use of the brand cannot be proved.